Trade Mark

INTRODUCTION
Characteristics of Trademarks can be traced in the ancient world. As long as 3000 years ago, Indian craftsmen used to engrave their signatures on their artistic creations before sending them to Iran. Later on over 100 different Roman pottery marks were in use. . With the flourishing trade in the Middle Ages the use of trademarks increased.
Today trademarks (often abbreviated as TM in English) are in common usage and most people on the planet could distinguish between the registered and unregistered trademarks.
The growing importance of trademarks in commercial activities is due to the increased competition among companies undertaking trade in more than one country. Trademarks have been used to simplify the identification by consumers of goods or services, as well as their quality, value and ownership. Thus, a trademark may be considered as a tool of communication used by producers to attract consumers and to flow their goodwill in the market.

TRADE MARK
“Trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors and
i) a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to sue the mark; and
ii) a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right either as proprietor or by way of permitted user, to use the mark with or without any indication of the identity of that person, and include certification trade mark or collective mark.
A trademark may consist of words, designs, letters, numerals or packaging, slogans, devices, symbols, etc.
It is necessary to say that a service mark is similar to a trademark, differing only in that the latter protects goods, while the former protects services. Generally speaking the term trademarks includes both trademark and service marks.

Requirement
A Trade Mark should satisfy the following requirements-
1. It should be a mark i.e. device, brand, heading, label, ticket, name or an abbreviation of a name, signature, word, letter or numeral shape of goods, packaging or combination of color or any combination thereof.
2. It should be capable of being represented graphically.
3. It should be capable of distinguishing goods or services of one person from those of others.
4. It should be used or proposed to be used in relation to goods or services.

Functions
A Trade mark perform the following functions-
1. It identifies the goods of one trade and distinguishes them goods sold by others.
2. It signifies that goods bearing similar mark come from one source.
3. It signifies that goods bearing similar mark are of same quality.
4. It acts as a prime instrument in advertising and selling the goods.
Purpose
The purpose of the Trade mark protection is to provide for the registration and better protection of trade marks for goods and services and to prevent the use of fraudulent marks damaging the goodwill and reputation of original ones.
A trade mark in order to get registered should have the following qualities.
a) Distinctiveness or distinctive character, or capable of distinguishing.
b) Deceptive similarity or similarity or near resemblance of marks.
c) Same descriptive or similarity of goods.
Commercial Exploitation or Assignment
Commercial Exploitation of registered Trade Mark can be done by the proprietor by assigning or transmitting the trade mark for any consideration and to give receipt. A registered trade mark of any goods or services is assignable or transmissible with or without goodwill.

CONDITION FOR REGISTRATION OF TRADE MARK
The essential requirement for registration of trade mark is that any person who claims to be the proprietor of trade mark should have legitimate claim to the proprietorship of mark.
A claimant may establish his /her claim on the mark -
i) Through the use of the mark in relation to particular goods by himself/herself.
ii) Through his/her intention to use the mark.
However Trade Marks Act, 1999 lays down some absolute ground for registration of Trade Marks under the Act. Following Trade Marks are not registrable under the Trade Marks Act, 1999
1) Trade Marks which are devoid of any distinctive character.
2) Trade Marks which exclusively consists of marks or indications which may serve in to designate features of goods or services.
3) Trade Marks which exclusively consists of marks or indications which have become customary in the current language or in established practices of trade.

However if the trade mark have acquired a distinctive character because of the use made of it, before the date of application for registration such trade mark is not refused registration.
4) If trade mark is of such nature as to deceive public or cause confusion.
5) Comprises the matter which is likely to hurt religious sentiments of any class, section or citizens of India.
6) Contains scandalous or obscene matter.
7) If its use is prohibited under the Emblems or Names (Prevention of improper use) Act, 1950.
8) The shape of goods which results from the nature of goods themselves.
9) The shape of goods which is necessary to obtain a technical result.
10) The shape which give substantial value to the goods.

PROCEDURE FOR AND DURATION OF TRADE MARK
Who can make an Application for Registration?
1) Any person claiming to be the proprietor of Trade Mark used or proposed to be used by him may apply in writing to the Registrar of Trade mark.
Single application may be made for registration of Trade Mark and fee payable therefore, for different classes of goods and services.
Separate application is required for registration in more than one class.
2) Application for registration of Trade Mark is to be filed in the office of the Trade Mark Registry (TMR) within whose territorial limits the principle place of business in India is situated.
In case of joint business the principle place of business of first applicant is situated.
In case where the applicant or joint applicant does not carry business in India, the application is to be filed in the TMR within whose territorial limits the place mentioned in the address for service in India as disclosed in the application is situated.

Registration
1) When an application for registration has been accepted and either

The application has not been opposed and the time for notice of expiration has expired.

The application has been opposed and the opposition has been decided in the favor the applicant.

The Registrar shall register the said Trade Mark unless the Central Government direct otherwise.

2) The date of application is to be deemed to be the date of the registration.
3) On registration the registrar shall specify date of filing of application, actual date of registration, goods or services and class or classes in respect of which it is registered.
4) On registration registrar is obliged to issue a certificate of registration to the applicant which is to be sealed with the seal of TMR. The certificate is to be issued in the form 0-2.
5) If the registration is not completed with in 12 months from the date of application by reason of default on the part of the said applicant, the registrar may after giving notice to the applicant treat the application as abandoned, unless it is completed with in the time notified in the notice.
Duration, Renewal of Trade Mark
The duration for registration of trade mark under section 25 of the Trade Marks Act, 1999 is 10 years from the date of registration. But it may be renewed from time to time.

EFFECT OF REGISTRATION OF TRADE MARK
1) Under common law the only way to protect unregistered Trade Marks rights against infringement is by an action for passing off. Whereas registration affords better protection of Trade Marks, by providing a simple means of providing title to the mark and remedy for infringement of that title.
2) Registration enables the proprietor to assign the Trade Mark without the goodwill of the business.
3) In case of infringement of registered trade mark the owner of such mark is available with civil remedy against infringement such as an injunction either damages or on account of profits. The owner of such mark is also available with criminal remedy against infringer where the person accused of infringement may be imprisoned or fined.